Responding to a Trademark Examiner's Objection

What to do when an examiner objects to your application

If you have filed for a federal trademark registration at the U.S. Patent and Trademark office, chances are good that you have received (or will receive) an objection from a trademark examiner. Often, the objections are easily corrected – for example, you must furnish a new specimen. But sometimes, the objections are more complex and require research and writing an argument in response. If you can’t afford to hire an attorney, here are some suggestions for dealing with the matter yourself.

Plenty of available responses

The good news is that you have online access to hundreds (maybe thousands) of real-life responses to trademark objections via the USPTO's  Trademark Document Retrieval  (TDR) system, or alternatively via Trademark Applications and Registrations Retrieval  (TARR). You can get to both from the  USPTO homepage. To find these documents plug the appropriate serial number into TDR -- for example, try your own serial number and you'll see a list of all the filed documents. Click on any title and you will see the document (or check the box and download a PDF).

Use the TTAB and TTABlog

As you will see, accessing the documents isn't difficult. The challenge is finding those trademark applications that match your situations so that you can crib from the right docs. In other words you want to piggyback on the work of another applicant who succeeded with similar facts. One way to find cases similar to yours is at the  TTABlog  which covers the proceedings of  Trademark Trial and Appeals Board (TTAB). We recommend searching the blog for terms similar to the ones in your objection -- for example if your mark is alleged to be "geographically descriptive," search for that term and copy the relevant serial numbers for the trademarks in dispute. Check the responses in those TDR files. By the way, TTAB opinions and docs never show up in the TDR, but can be obtained at  TTABVUE, if you type in the application or registration number, proceeding number, or other identifying material. The most the Trademark Office databases will do is post a notice in the TARR status database, noting that an opposition has been filed. There is a very handy database maintained at  TTAB Across the Board, which allows you to type in phrases like "geographical descriptiveness" in the Search Documents box, and get a list of TTAB cases where that shows up, and clickable access to the specific documents.

Objections and Objections

Generally, you will be responding to an examiner's Office Action refusing or rejecting your application. (Here's a  helpful system for responding.) You should be aware that the public (including competitors) can also file objections to your trademark application during a thirty day period following publication of your mark in the Official Gazette. That requires different formalities, though it may involve similar language and legal arguments.

Thinking Like an Examiner

Finally, if you're curious as to the starting point for examiner objections, you should review section 1200 of the  Trademark Manual of Examining Procedure. It's available online and is searchable by topic.

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